Tagged: Licensing

In today’s digital age, cloud computing has lowered the barrier of entry into many marketplaces by providing network access to a shared pool of configurable computing resources. Cloud services allow business to forego upfront capital costs on servers, network infrastructure, and software allowing companies to focus on establishing and differentiating its business instead of worrying about its IT resources. Additionally, it is typically a “pay as you go” service meaning that businesses can scale up or down as needed in real time. However, entrusting a third-party as the sole source of the company’s network, software, and data storage functionality puts the company at risk of losing these services should the provider enter bankruptcy.

Intellectual property and bankruptcy disputes are matters typically reserved for the subject matter jurisdiction of the federal courts. However, in Spiro v. Vions Technology, Inc., C.A. No. 8287-VCP (Del. Ch. March 23, 2014) the Court of Chancery of the State of Delaware (“Chancery Court”) addressed a procedural question as to subject matter jurisdiction and held that where a debtor’s intellectual property and related licensing agreements had been abandoned by the bankruptcy trustee, the Chancery Court has subject matter jurisdiction over an action to determine, among other things, the ownership of such intellectual property. Specifically, plaintiff Spiro, a creditor in the bankruptcy action and a former shareholder of the bankrupt corporation, Ionsep Corporation Inc. (“Ionsep”), brought an action in the Chancery Court seeking, along with damages, that the Court: (i) void the exclusive licensing of the intellectual property as an allegedly fraudulent transfer, (ii) enjoin further licensing of the intellectual property by the licensee and (iii) return the intellectual property to the shareholders of Ionsep. Defendant Vions Technology Inc. (“Vions”), to which the intellectual property at issue had been transferred pre-bankruptcy, argued that Spiro had no standing to bring the fraudulent transfer action and that the bankruptcy court maintained jurisdiction over the intellectual property in question.

Like 2013, 2014 promises to be an exciting year for intellectual property law. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. As we reported, on December 6, 2013, the Supreme Court granted certiorari in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. et al., 13-298. The Alice case concerns the patentability of a computer software program used to facilitate financial transactions. Sitting en banc, the Federal Circuit split 5-5 to affirm the district court’s decision and found Alice’s patents ineligible for protection under 35 U.S.C. § 101, a fractured opinion that left lawyers and their clients uncertain about which types of software patents are patentable.

We have been reporting news and developments regarding the Intellectual Property Exchange International, Inc. (IPXI). Yesterday, the IPXI released details of its first Unit License Right (ULR) contract offering, involving among other assets, a portfolio of Philips organic light-emitting diode (OLED) technology patents. Purchasers of each ULR will be granted “the right to manufacture, use, sell, offer to sell or import five square meters of an OLED display for application in any display screen device.” So after many fits and starts, the IPXI, touted as “the world’s first financial exchange for licensing and trading intellectual property (IP) rights,” appears underway.

On March 25, seed giants DuPont and Monsanto entered into technology licensing agreements that ended their ongoing patent and antitrust lawsuits. According to the terms of the agreement, DuPont will pay at least $1.75 billion in licensing and royalty fees to Monsanto from 2014 to 2023. These payments include fixed royalty payments from 2014 to 2017, totaling $802 million, and per-unit based royalty payments from 2019 to 2023, subject to annual minimums, totaling $950 million. DuPont and Monsanto also will dismiss their respective patent and antitrust lawsuits, including the August 2012 damage award of $1 billion against DuPont that have been pending since 2009. Further details on these agreements can be found in DuPont and Monsanto’s joint March 26 press release and DuPont’s March 26 Form 8-K.

On Monday, the Supreme Court denied Rates Technology Inc.’s petition for writ of certiorari to hear whether a pre-litigation no-challenge provision is void under Lear, Inc. v. Adkins, 395 U.S. 653 (1969) as the Second Circuit found. We previously discussed the petition, the Second Circuit’s holding, and the no-challenge clause which prevents a licensee from challenging the validity of a patent.

The production of a party’s privileged documents is every lawyer’s–and client’s–worst nightmare because it provides additional facts (and avenues for discovery) as well as legal analysis of those facts that may not have existed. In layman’s terms, it is a game changer. A recent decision plays out this very scenario and shows that despite the production of privileged documents, they can be salvaged if the producing party acted properly before and after the disclosure.

Two recent decisions highlight the importance of proper preparation during patent litigation, from the perspective of both plaintiffs and defendants. In In re Bill of Lading, No. 2010-1493, 2012 U.S. App. LEXIS 11519 (Fed. Cir. June 7, 2012), the Court held that direct infringement only needs the same level of pleading as that outlined in Form 18 (which is a sample complaint for direct infringement) of the Appendix of Forms to the Federal Rules of Civil Procedure, while in contrast, indirect infringement needs to be pled in accordance with the higher standard delineated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). In re Bill of Lading, 2012 U.S. App. LEXIS 11519, at *17-27.

Under the joint auspices of the US Patent and Trademark Office the National Institute of Standards and Technology/Manufacturing Extension Partnership, the IP Awareness Assessment is now in the beta stage and available for businesses and inventors to assess their intellectual property awareness. Dubbed “A business and inventor’s IP education tool,” this web-based offering is designed to assess IP knowledge and provide personalized training resources for businesses and inventors.

On January 12, 2012, ICANN, the Internet’s domain name registration watch dog, began accepting applications for new generic Top-Level Domains (gTLDs) to add to those already in existence, including .com, .net, .biz and others. Under the new scheme, any company can apply for a gTLD, thereby expanding the domain name system (DNS). Ultimately, this expansion will change the Internet forever. Each new gTLD poses an incremental risk for trademark owners who are already under heavy assault in cyberspace from cybersquatting (registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark owner), brandjacking (assuming the online identity of another entity for the purposes of trading on another’s brand equity), and typosquatting (registering URLs with common misspellings) by those seeking to generate illicit profits. According to the Coalition Against Domain Name Abuse (CADNA), cybersquatting already costs trademark owners more than $1 billion each year due to lost sales, lost goodwill, and increased enforcement costs. However, with a major increase in gTLDs, many corporations fear an expansion in expensive litigation to enforce their brands and trademarks.

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